MPEP SECTION SUMMARY

Where two or more related inventions are claimed, the principal question to be determined in connection with a requirement to restrict or a rejection on the ground of double patenting is whether or not the inventions as claimed are distinct. If they are distinct, restriction may be proper. If they are not distinct, restriction is never proper. If nondistinct inventions are claimed in separate applications or patents, double patenting must be held, except where the additional applications were filed consonant with a requirement to restrict.

MPEP SECTION SUMMARY

A combination is an organization of which a subcombination or element is a part.

MPEP SECTION SUMMARY

The inventions are distinct if it can be shown that a combination as claimed:

• (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
• (B) the subcombination can be shown to have utility either by itself or in another materially different combination.

MPEP SECTION SUMMARY

Two or more claimed subcombinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually restrictable when the subcombinations do not overlap in scope and are not obvious variants.

To support a restriction requirement where applicant separately claims plural subcombinations usable together in a single combination and claims a combination that requires the particulars of at least one of said subcombinations, both two-way distinctness and reasons for insisting on restriction are necessary. Each subcombination is distinct from the combination as claimed if:

• (A) the combination does not require the particulars of the subcombination as claimed for patentability (e.g., to show novelty and unobviousness), and
• (B) the subcombination can be shown to have utility either by itself or in another materially different combination.

MPEP SECTION SUMMARY

Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process.

MPEP SECTION SUMMARY

A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown: (A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different process.

MPEP SECTION SUMMARY

An apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown: (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different apparatus.

MPEP SECTION SUMMARY

A product and a process of using the product can be shown to be distinct inventions if either or both of the following can be shown: (A) the process of using as claimed can be practiced with another materially different product; or (B) the product as claimed can be used in a materially different process.
The burden is on the examiner to provide an example, but the example need not be documented.

If the applicant either proves or provides a convincing argument that the alternative use suggested by the examiner cannot be accomplished, the burden is on the examiner to support a viable alternative use or withdraw the requirement.

MPEP SECTION SUMMARY

Where an application contains claims to a product, claims to a process specially adapted for making the product, and claims to a process of using the product, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. If the examiner cannot make a showing of distinctness between the process of using and the product, restriction cannot be required.

MPEP SECTION SUMMARY

To support a requirement for restriction between two or more related product inventions, or between two or more related process inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., separate classification, status in the art, or field of search.
For other related product inventions, or related process inventions, the inventions are distinct if:

• (A) the inventions as claimed do not overlap in scope, i.e., are mutually exclusive;
• (B) the inventions as claimed are not obvious variants; and
• (C) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.

MPEP SECTION SUMMARY

Inventions as claimed are independent if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. If it can be shown that two or more inventions are independent, and if there would be a serious burden on the examiner if restriction is not required, applicant should be required to restrict the claims presented to one of such independent inventions. This section also includes an example.